WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Super-Krete International, Inc. v. Concrete Solutions, Inc.

Case No. D2008-1333

1. The Parties

Complainant is Super-Krete International, Inc., El Cajon, California, United States of America, represented by Procopio Cory Hargreaves & Savitch, LLP, San Diego, California, United States of America.

Respondent is Concrete Solutions, Inc., San Diego, California, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <supercrete.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2008. On September 2, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name at issue. On September 2, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 15, 2008. The Center verified that the Complaint and amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. The Response was filed with the Center on September 19, 2008. By email dated September 22, 2008, the Center sought confirmation from Respondent that its Response dated September 19, 2008, should be considered its complete Response. By email dated September 25, 2008, Respondent provided that confirmation.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 30, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

By email dated October 6, 2008, Respondent provided further information to the Center regarding transmission of the hardcopy of its Response. The Center notified the Panel on October 9, 2008 that it was in receipt of the hardcopy. On that date, the Panel requested and the Center forwarded to the Panel a scanned electronic file of the hardcopy Response. The only material difference between the electronic and hardcopy versions of Respondent's Response was inclusion with the hardcopy version of photocopies of webpage printouts referred to the Response.

4. Factual Background

Complainant is the owner of a trademark registration for the word mark SUPER-CRETE on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 2,375,309, dated August 8, 2000, in International Class (IC) 1, covering “concrete additives and concrete admixtures for concrete renovation, resurfacing and redecorating”, claiming date of first use of March 1, 1961, and first use in commerce of 1966. The application for this registration was filed on September 24, 1999. Complainant is also owner of a trademark registration at the USPTO for SUPER-KRETE, registration number 2,377,606, dated August 15, 2000, in IC 1, covering concrete additives and concrete admixtures (as further above), claiming date of first use and first use in commerce of 1989 (application filed September 24, 1999), and; a trademark registration at the USPTO for the word and design mark SUPER-KRETE, registration number 2,589,079, dated July 2, 2002, in ICs 1 and 2, covering concrete additives and concrete admixtures, and concrete sealer and coatings, claiming date of first use and first use in commerce of May 28, 1996 (each application filed September 24, 1999). (Complaint, Exhibits C-E). Complainant asserts that it acquired common law rights to the SUPER-CRETE mark “from its predecessor in interest, Lauren Hale”. Complainant provides no evidentiary support for this assertion, as would typically be relied upon, see, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 1.7.

Complainant operates a commercial Internet website at “www.super-krete.com”. Complainant's website is prominently headed with the term SUPER-KRETE and displays a variety of products under the trademark SUPER-KRETE. An internal search of Complainant's website indicated no usage of the term SUPER-CRETE or products identified as SUPER-CRETE products. (Panel visit of October 10, 2008) Complainant also holds registration for the domain name “super-crete.com”. That domain name was registered on September 23, 2003 and operates to redirect Internet users to its website at “www.super-krete.com”.

According to the registrar's verification report, Respondent is registrant of the disputed domain name. According to that report, the record of registration of the disputed domain name was created on March 17, 1999.

Respondent operates a commercial Internet website at “www.concretesolutions.com”. The home page for that website is headed “Concrete Solutions” and describes Respondent's business as follows:

An internal search of Respondent's multilevel website does not indicate any reference to SUPER-CRETE, SUPERCRETE or “supercrete”.

There is no indication or evidence in Complainant's submission to indicate that Respondent has used the disputed domain name to direct Internet users to its “Concrete Solutions” website. Respondent indicated that since 1999 it was using the disputed domain name to direct Internet users to its Concrete Solutions website, until it was contacted by Complainant in 2007, about one year prior to the filing of the Complaint in this matter. Respondent indicates that it deactivated its link pending legal clarification. The disputed domain name and Respondent's “Concrete Solutions” website are not currently linked. (Panel visit of October 10, 2008)

Complainant indicates that it attempted to resolve this matter informally with Respondent in 2007. On July 29, 2008, Complainant through its counsel sent a cease and desist and transfer to Respondent by email and certified mail. Complainant indicates that Respondent did not reply to that communication.

The Registration Agreement in effect between Respondent and Network Solutions, LLC, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties' Contentions

A. Complainant

Complainant alleges that it has rights in the trademarks SUPER-CRETE and SUPER-KRETE based on use in commerce and as evidenced by registration at the USPTO.

Complainant argues that Respondent's use and holding of the disputed domain name “constitutes the unlawful infringement of Complainants Mark, and is in violation of the federal anti-cybersquatting prescriptions of the Lanham Act.” Complainant argues that consumers and visitors to Respondent's “www.concretesolutions.com” website “will likely find themselves confused by the similarity to Complainant's ‘SUPER-CRETE' Mark and its use in connection with the Super-Krete Site”.

Complainant argues that Respondent has no right title or interest in its mark. Respondent is not an assignee or licensee of the mark. Respondent does not use the disputed domain name in connection with a bona fide offering of any goods or services. Respondent does not appear to have been commonly known by the disputed domain name, and does not make any “legitimate commercial or fair use of the SUPERCRETE.COM domain name”.

Complainant argues that Respondent registered and has used the disputed domain name in bad faith because Respondent had no trademark or service mark rights in the SUPERCRETE mark when it registered the disputed domain name. Complainant also argues that Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent's website or “divert and confuse customers with a blank page”, creating a likelihood of confusion as to Complainant's marks and as to whether Complainant is source, sponsor, affiliate or endorser of Respondent's website.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent argues that it registered the disputed domain name on March 17, 1999, along with other domain names that were descriptive of its super or superior concrete products. Complainant registered its <super-crete.com> domain name over four years later, on September 23, 2003. Respondent notes that Complainant filed its application for registration of the trademark SUPER-CRETE with the USPTO on September 24, 1999, and that registration issued on August 8, 2000. Applications for registration of SUPER-KRETE were filed on September 24, 1999, and registration issued on August 15, 2000.

Respondent states that other third party websites use “supercrete” in their domain name. Respondent notes that “[w]hen you search on Google, supercrete, you will find 33 pages of companies advertising supercrete products that are not affiliated with the Super-Krete Company. For example “www.canadiandriveway.com” (all the photos they are using on their website, without our permission, are Concrete Solutions photos advertising their supercrete products)” (brackets in original).

Respondent argues that it was not its intention to unfairly compete with Complainant. Inter alia, it did not pursue the domain name <super-crete.com> which was available when it registered the disputed domain name. Respondent indicates that Complainant registered “www.super-krete.com” on December 2, 1998, while it did not register “www.super-crete.com” until September 23, 2003. Respondent registered the disputed domain name on March 17, 1999.

Respondent indicates that it has acted in good faith, as evidenced by the fact that when it was initially contacted by Complainant it ceased linking its website to the disputed domain name “until such time as we could be certain we were legally entitled.” Respondent asserts that the term “supercrete” is in common use in the concrete industry.

Respondent requests the Panel to reject Complainant's request to direct the registrar to transfer the disputed domain name.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent's domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has demonstrated that it owns rights in the trademarks SUPER-CRETE and SUPER-KRETE based on use in commerce and as evidenced by registration at the USPTO (see Factual Background, supra).

Complainant alleges that it holds common law rights to those marks that arose prior to their registration at the USPTO. Among other things, Complainant refers to its claimed dates of first use and first use of the trademarks in commerce on its applications for registration that substantially predate those applications.

The date of application for trademark registration serves as constructive first use contingent upon issuance of the registration. The U.S. Lanham Act provides:

Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing--

(1) has used the mark;

(15 U.S.C. §1057)

The dates of first use and first use in commerce claimed on a trademark application do not establish an evidentiary presumption in favor of a trademark registrant. As McCarthy notes: “The allegation of a date of first use in a use-based application for registration is not evidence of a date of first use on behalf of an applicant or registrant.” [footnote omitted] 3 McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.) McCarthy also notes: “In inter partes proceedings, a trademark registration resulting from a use-based application is proof of use only as of its filing date, not of the date of first use alleged in the application.” [footnote omitted] (Id.)

Complainant has submitted no evidence to support its claim of common law rights in the SUPER-CRETE or SUPER-KRETE trademarks that precede the dates upon which it filed its applications for trademark registration. In consequence, from the standpoint of this proceeding, its rights in the SUPER-CRETE and SUPER-KRETE trademarks arose on September 24, 1999, the date of filing of each of its trademark applications (establishing constructive first use as of that date).

Complainant alleges that the disputed domain name, <supercrete.com>, is confusingly similar to its SUPER-CRETE and SUPER-KRETE trademarks. Although the disputed domain name is distinguished from the SUPER-CRETE trademark (i.e., the closer in form of Complainant's trademarks) only by the absence of a hyphen in the domain name, this distinction is somewhat more significant than might ordinarily be the case with the difference of a hyphen. The Panel finds that the term “supercrete” is descriptive, as Respondent argues, constituting the combination of a synonym for superior or exceptional, and a contraction of the word “concrete”. There is some evidence provided by Respondent of the use of “supercrete” by third parties as such a descriptive term. The Panel finds that Complainant presumably created its SUPER-CRETE mark through its descriptive combination, but has been able to establish secondary meaning for this term so as to establish trademarks rights under U.S. law. It is notable, however, that Complainant – at least as evidenced by its website presence appears to rely on SUPER-KRETE as its working trademark, suggesting that Complainant has elected to use the less descriptive “krete” in combination with “super-” as its means for distinguishing its products (i.e., SUPER-KRETE), placing less reliance on the more descriptive SUPER-CRETE. Further evidentiary submissions by Complainant and Respondent might be useful in establishing the extent to which the disputed domain name, <supercrete.com>, is confusingly similar to SUPER-CRETE or SUPER-KRETE from the standpoint of consumers and Internet users. The Panel renders its determination in favor of Respondent on grounds of Respondent's lack of bad faith, as well as on legitimate interest grounds. The Panel assumes for purposes of this decision that the disputed domain name is confusingly similar to Complainant's SUPER-CRETE trademark.

The Panel next addresses the issue of bad faith.

B. Registered and Used in Bad Faith

In order to be found to have engaged in abusive domain name registration and use, Respondent must have registered and used the disputed domain name to take unfair advantage of a complainant's rights in its trademark.1 Respondent's bad faith intention could be evidenced in a number of ways as illustrated in Paragraph 4(b) of the Policy, which provides a non-exhaustive list of bad faith conduct.

As a matter of general principle under the Policy, Respondent could not have acted to take unfair advantage of Complainant's rights in trademarks before those rights arose. A finding that Respondent registered and used the disputed domain name in bad faith presupposes that Complainant had trademark rights that could be unfairly exploited at the time of domain name registration. See, e.g., Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet,WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie / Symbility,
WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074.

Respondent registered the disputed domain name on March 17, 1999. Complainant established constructive first use and rights in the SUPER-CRETE and SUPER-KRETE trademarks through the filing of its applications for registration on September 24, 1999 (see discussion in Section 6.A above). When it registered the disputed domain name on March 17, 1999, Respondent could not have intended to take unfair advantage of trademark rights that Complainant had not yet established. Respondent did not act in bad faith within the meaning of Paragraph 4(b) of the Policy.

There are some panel decisions under the Policy in which bad faith registration and use has been found notwithstanding that trademark rights had not been established at the time of domain name registration, as limited exception to the general sequencing principle. See, e.g., General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online,
WIPO Case No. D2003-0845.

Without expressing an opinion as to whether it concurs with prior panel decisions finding a limited exception to the general sequencing rule requiring the establishment of trademark rights as a condition precedent to a finding of bad faith, the Panel determines that Respondent's conduct does not here exceptionally provide Complainant with early rights.

C. Rights or Legitimate Interests

Complainant must also demonstrate that Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which Respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

Respondent has indicated its belief that its registration of the disputed domain name would not conflict with trademark rights of Complainant. Because Respondent registered the disputed domain name before Complainant acquired federally registered rights in its trademarks, Respondent's assertion is prima facie reasonable. Respondent did not receive notice directly from Complainant (by Complainant's own account) of Complainant's rights in its trademarks until 2007, eight years after Respondent registered and began using the disputed domain name. Respondent used the disputed domain name to direct Internet users to its Concrete Solutions website where it offered its own branded concrete products for sale until it received notice from Complainant, and it delinked its website from the disputed domain name pending clarification of the legal situation. Respondent indicates it did not use the disputed domain name to take unfair advantage of Complainant's trademarks, but rather because the term “supercrete” is descriptive of a superior concrete product.

Respondent indicates that it could have but did not seek to register “super-crete.com” in March 1999, when it registered “supercrete.com”. It does not make clear whether it avoided the hyphenated term because it was aware of some potential claim of rights by Complainant, or because it was not interested in the hyphenated term when the unhyphenated term was available. This evidence is not especially probative regarding Respondent's conduct.

The burden of proof lies with Complainant to establish that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not carried the burden of demonstrating that Respondent did not engage in a bona fide offering of goods prior to notice of the dispute.

The Panel determines that Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name.

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.